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At the end of a week shortened by the Memorial Day holiday, the PTAB (“Board”) issued just two decisions in Technology Center (TC) 1600 during the week of May 28. The Pfizer decision hammers home that hindsight is not always 20/20, and there is no place for such bias in an obviousness analysis, while the shorter Roquette Freres decision serves to remind us of the old adage ‘mean what you say and say what you mean.’

Pfizer, Inc. v. Biogen, Inc., and Genentech, Inc., IPR2018-00086 (Decision Entered May 31, 2018). Pfizer petitioned the Board to institute an inter partes review of U.S. Pat. No. 8,545,843 (“’843 Patent”) on six grounds of obviousness based on various combinations of nine references. Biogen and Genentech filed a preliminary response to the petition. The patent claimed a method of treating vasculitis in patients not having rheumatoid arthritis or cancer. Evaluating the argument that the ’843 Patent claims would have been obvious over nine references and without citing KSR and the ‘obvious to try’ standard, the Board concluded that — at best — Pfizer’s cited combinations invited experimentation into the possibility of treating vasculitis with rituximab. According to the Board, rather than present a prima facie case of obviousness, Pfizer engaged in impermissible hindsight bias. When presenting its case, Pfizer narrowly framed its obviousness analysis in terms of the problem solved by the invention, while simultaneously misstating what the references fairly taught. Notably, the Board explained that Pfizer characterized the problem to be solved as excluding known and efficacious therapies, in favor of trying to identify new therapies that could match or improve the efficacy of those known. This approach highlighted the hindsight bias forming the supporting backbone of Pfizer’s obviousness grounds to the Board. As a result, the Board denied institution of inter partes review because Pfizer did not meet its burden to show that an ordinary skilled artisan would have had a reasonable expectation of success in arriving at the ’843 Patent claims.

Roquette Freres, S.A. v. Tate & Lyle Ingredients Americas LLC, IPR2017-01506 (Decision Entered June 1, 2018). In an Order having an uncommon set of procedural grounds, the Board terminated and dismissed an inter partes review proceeding because Roquette failed to repay a refund of a $6,000 post-institution fee by the Board’s deadline. The Board warned Roquette that repayment must be timely to prevent the proceeding from being terminated in its entirety. On the due date, Roquette responded by expressly refusing to repay the refunded portion while attempting to place certain conditions (e.g., estoppel) upon the Board in support of its refusal. Despite Roquette’s belated pivot and payment of the fees — five days after the deadline — the Board unsurprisingly terminated the proceeding under 37 C.F.R. § 318(a) without a final written decision. Notably, and without remorse, the Board reiterated that they have not and will not counsel parties on estoppel effects of any action taken by or before the Board (see Footnote 1).